adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor and Soluxury HMC v. Yu Gang

Case No. D2012-1593

1. The Parties

Complainants are Accor and Soluxury HMC (the “Complainant”), both of Paris, France, represented by Dreyfus & associés, France.

Respondent is Yu Gang of Henan, China.

2. The Domain Name and Registrar

The disputed domain name <sheshansofitel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2012. On August 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2012, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 2012.

The Center appointed Gary J. Nelson as the sole panelist in this matter on September 13, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of at least two International Trademark Registrations with valid extensions into China for SOFITEL, and at least one European Community Trademark Registration for SOFITEL. Specifically, Complainant owns at least the following trademark registrations:

Country/Territory

Reg. no.

Mark

Classes

Date of Registration

International Registration

China Extension

863332

SOFITEL

35, 39 and 43

August 28, 2005

International Registration

China Extension

939096

SOFITEL

35, 36, 43 and 44

August 30, 2007

European Community

1,942,852

SOFITEL

25

May 29, 2009

The disputed domain name appears to have been registered on December 14, 2011. The operational website at <sheshansofitel.com> resolves to an active website that offers a hotel room booking service in Chinese. The website appears to feature trademarks owned by Complainant.

5. Parties’ Contentions

A. Complainant

Complainant owns trademark rights in SOFITEL which it acquired prior to the registration of the <sheshansofitel.com> domain name.

The disputed domain name <sheshansofitel.com> is confusingly similar to Complainant’s SOFITEL trademark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

Complainant is a world leader in economic and mid-scale hotels, and a major player in upscale and luxury hospitality services. For more than 40 years, it has provided customers with expertise acquired in this core business.

Complainant operates more than 4,400 hotels in 90 countries worldwide and over 500,000 rooms, from economy to upscale. The Complainant’s hotel group includes notable hotel chains such as Sofitel, Pullman, Novotel, Mercure and Ibis. Complainant offers hotel stays tailored to the specific needs of each business and leisure customer and Complainant’s brands are recognized and appreciated around the world for their service quality.

Complainant owns, among others, the following domain names: <sofitel.com>., <sofitel.org>, <novotel.com> and <sobysofitel.com>.

Complainant’s SOFITEL trademark is established in 52 countries in Europe, Africa, the Middle East, Asia, and in North and South America.

Complainant operates many hotels in China, where 102 of its hotels are located among which 20 hotels are branded with the SOFITEL mark. One of these Sofitel branded hotels, situated on Sheshan Island, bears the name of Hotel Sofitel Shanghai Shesshan Oriental.

The disputed domain name resolves to an active website reproducing the SOFITEL mark, offering the booking of hotel rooms in the Chinese language.

Complainant sent a cease-and-desist letter to Respondent on February 10 and 13, 2012, requesting Respondent to cancel the disputed domain name and undertake in writing not to use the trademark SOFITEL under any form. Complainant sent reminders on March 1st and March 15, 2012. Respondent did not reply to any of its letters and emails.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns prior rights in the SOFITEL mark and the disputed domain name is confusingly similar to Complainant’s SOFITEL mark.

Complainant owns at least three SOFITEL trademark registrations. One of these registrations is for International Registration No. 863332, with an extension into China. The relevant priority date for this registration (i.e., August 28, 2005) precedes the date upon which the disputed domain name was registered (i.e., May 29, 2009).

Accordingly, Complainant has established rights in its SOFITEL mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,
WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The disputed domain name, <sheshansofitel.com>, is confusingly similar to Complainant’s SOFITEL trademark because the disputed domain name incorporates the entirety of Complainant’s SOFITEL trademark and merely adds a geographically descriptive term (i.e., “sheshan” a Chinese Island) and the top-level “.com” domain suffix. Neither the addition of a purely geographically descriptive term to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,
WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH,
WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to Complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,
WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

The addition of the geographic term “sheshan” directly in front of Complainant’s SOFITEL mark is insufficient to avoid a finding of confusing similarity.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,
WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “sheshan,” “sofitel,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its SOFITEL mark.

Complainant has provided unrebutted evidence showing that Respondent is operating a website at “www.sheshansofitel.com” featuring services that purport to allow an Internet user to reserve a room at one of Complainant’s hotels. Respondent’s decision to add a common geographic descriptive word (i.e., “sheshan”) to a well known trademark for the purposes of attracting Internet users to Respondent’s own website does not instill Respondent with legitimate rights in the composite name or mark. See Chanel, Inc. v. Estco Technology Group,
WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstore.com> and <chanelfashion.com> to complainant).

Moreover, the corresponding website operating in association with the disputed domain name <sheshansofitel.com> is using Complainant’s SOFITEL mark to promote the services purportedly offered by Respondent. Infringement of another’s trademark or service mark can never create rights or legitimate interests in a corresponding domain name.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

Given that Complainant appears to operate at least 102 hotels in China, and is one of the premiere hotel operators in the world, the Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the SOFITEL trademark. Supporting this conclusion is the fact Respondent is directly targeting Complainant on its website as part of the services it offers. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,
WIPO Case No. D2000-0911 (“the fact that Respondent chose [sic] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name [at issue]”).

The Panel also finds that Respondent’s use of the disputed domain name <sheshansofitel.com> is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s SOFITEL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This ongoing activity is a direct violation of paragraph 4b(iv) of the Policy, and is evidence of bad faith registration and use.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sheshansofitel.com> be cancelled, as requested by the Complainant.